·If the applicant has filed and is
prosecuting an application for the same or substantially the same invention in
other countries, then he has to submit Form 3 detailing out particulars like
date of filing, Publication number, country name etc.

·If there is no foreign filing then the
applicant can give a NIL statement

Form
5: Declaration of Inventorship:

·If the inventors are not applicant in
making an application for the patent, then the applicants are required to file a declaration that the applicants
believe that the persons so named are the true and first Inventor

·In case the applicant is himself an
inventor, then there is no need to file
the declaration of inventorship

·Declaration of inventorship may also be
filed within 1 month from the date of filing the complete specification

·A request for extension of time may be
filed using form 4

Proof
of Right (S.7(2))

·Where the application is made by virtue of an
assignment of the right toapply for a patent for the invention, there shall be
furnished with the application, or within such period as may be prescribed
after the filing of the application, proof of the right to make the
application.

·Applicant must file proof of right
during filing or 6 months from the date of filing

·It can be produced in the body of the
application(Form 1) or by way of separate assignment

·If application by way of legal
representative needs to be filed then file a death certificate as proof of
right to make an application

Patent
application has to first filed in
India atleast 6 weeks before
filing it abroad. If he wants to file
the patent directly then he has to take permission from the controller by filling Form-25 and Rs 4,000 fees

25

71(1)

2

Application
must be accompaniedby Provisional/Complete specification (Form
1,2,3,5,26 and proof of right)

7(4)

3

If provisional
is filed then complete specification must be filed within 12 months from the date of filing
of provisional specification

9(1)

4

Patent
application is published after 18
months from the date of filing

11A(1)

5

In
case an Early publication is necessary:Form-9, feesRs 10,000

11A(2)

6

Applicant
to file Request for examination (RFE)
within 48 months from the date of
priority or date of filing whichever is earlier; Form-18, Fees :Rs10,000

11B(1)

24B(1)(i)

7

After
RFE, Controller forwards copy of
all documents to examiner within 1
month from date of publication or one month from RFE whichever is later

12(1)

24B(2)(i)

8

Examiner
carries out patentability search, makes report and forwards it to controller,
Time-limit-ordinarily within 1 month but not more than 3 months from the date
when the documents were received by examiner

12(2)

24B(2)(ii)

9

Controller
disposes of the report within 1 month from the date of receipt of the report

24B(2)(iii)

10

Controller
forwards first examination report(FER) to agent/applicant within 6 months
from RFE or date of publication whichever is later

14

24B(3)

11

Applicant
to comply to the requirements imposed on him from the FER within 12 months
from the date of FER forwarded to him. If no communication is heard after
this period, application is deemed to be abandoned

21

24B(4)

12

If
the application if found in order of grant, it is granted expeditiously with
seal of patent office and date on which it is granted is registered in
register of patent office

43

Note:The type of questions likely to be asked
is usually in case studies, this question has also been asked as Short note in
October 2006 paper, questions like how will you obtain a patent in shortest
possible time- The answer is File complete specification first instead of
provisional, then request for early publication through Form 9, fees Rs
10,000(Legal entity), and after publication immediately file for RFE through
form 18, Fees: Rs 10,000.Rest of the steps from 7-12 are compulsory for grant
of patent. Also we need to explain the various forms ,fees and their title and
section, we need to also explain that claims should be clear, succinct and
fairly based on matter disclosed and should relate to single invention,
Complete specification shoulddisclose
the best mode to carry out the invention. This helps to obtain patent in
shortest possible time.

Below are some
questions which can be answered using the above table

Jan
2010: Your client has applied for a provisional patent
application in India. Draw a time line of all the important events till the
date of grant of her patent application as per the Indian Patents Act and
Rules.

April
2008:

Questions related to
postdating of application

Dec
2008:

Option 1: Request to post date the application as
per S.17(1)

Key features of
the section

·Provisional as well as
complete specification can be requested for postdating.

·Request for postdating
is possible any time after filing provisional or complete specification, but
before grant of patent.

·The date of post-date
shall be specified in application to controller.

·Request for post-date
shall not be made after filing provisional/complete specification.

·Post-dating is not
possible to a date later than the date on which it was actually made, i.e, maximum period of 6 months.

Request for post
dating can be made to the controller along with a fees of Rs 2000/-. By doing
this the applicant receives 6 more months to file the complete specification

Option 2: Abandoning the application

Do not file the
complete specification if the priority date is not important then by section 9
(1) the patent will get abandoned automatically and a fresh patent application
can be made.

9(1) Where an
application for a patent (not being a convention application or an application
filed under the Patent Cooperation Treaty designating India) is accompanied by
aprovisional specification, a complete
specification shall be filed within twelve months from the date of filing of
the application, and if the complete specification is not so filed, The
application shall be deemed to be abandoned.

Option 3: S.9(3) :Applicant may decide to request the controller within 12
months from the date of filing to treat the specification as provisional
specification and proceed with the application

Table for Forms and Fees

Fees
(Rs)

No
Fees

200

300

500

1000

1500

2000

2500

3500

Forms

Form 2,3, 5, 26 & 27

Form 13

Form 4

Form 6, 8 and 13

Form 1, 13, 16, 23, 24, 25

Form 7, 10, 11, 12, 14, 15, 17 &
19, 20, 21,

Form 22

Form 9 & 18

Form 18

Note:

Fees for Natural person represented in this table, for legal
entity Multiply the above figure by 4

All forms for compulsory License form , fees is Rs 1500
(Form 17,19,20,21)

PCT Application

Jan 2010

Your client
Sivaram has filed a patent application in Germany on January 1st 2006. He has
filed a PCT application on December 31st 2007. By which date should you file
his national phase application in India? Assuming you have filed his national
phase application in India on January 1" 2008, what is the last date by
which the request for examination is to be filed in India to keep his
application live?

Jan 2010

You have filed a
provisional patent application in India
and now wish to file an application under the Patent Cooperation Treaty (PCT). Draw a timeline with the important dates for actions under the PCT system

National
Filing date:

Rule 20.
International applications designating or designating and electing India

Rule 20(4) (i) :
The time limit referred to in sub-rule (2) shall be thirty one months from

the priority
date as referred to in Article 2(xi);

Priority date: 1st Jan 2006

National filing date: before 1st August 2008
(31 months from priority)

Filing for
Request for examination:

Rule 24 B:
Examination of application.;

(1) (i) A
request for examination under section 11 B shall be made in Form 18 within
forty-eight months from the date of priority of the application or from the
date of filing of the application, whichever is earlier;

Hence RFE should be filed before 1st Jan 2010 (Priority date: 1st Jan 2006
, hence within 48 months from this date RFE should be filed)

(Remember: A2CEUS).(Australia, Austria, China, Europe, United States and Sweden)

Competent
International Searching Authority:

Australian
Patent Office, Austrian Patent Office, European Patent Office, State
Intellectual Property Office of the People’s Republic of China, Swedish Patent
and Registration Office or United States Patent and Trademark Office